WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. WhoisGuard Protected / WhoisGuard, Inc. / Xinke Liu

Case No. D2019-0918

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is WhoisGuard Protected / WhoisGuard, Inc., Panama / Xinke Liu, Australia.

2. The Domain Name and Registrar

The disputed domain name <iqospost.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 25, 2019.

The Center verified that the Complaint together with the amendment to the Complaint/amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. Respondent submitted various email communications on April 24, 2019.

The Center appointed Alfred Meijboom as the sole panelist in this matter on May 27, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries. In the course of transforming its business from combustible cigarettes to a heating device into which specially designed tobacco products are inserted and heated to generate a flavored nicotine-containing aerosol had been developed and sold against an investment of USD 6 billion. The Complainant names this product line “IQOS.” The products were first launched in Japan in 2014 and had obtained a 17.3% share of the market in Japan. Today the products are available in approximately 44 markets across the world, with approximately 6.6 million users worldwide.

The Complainant owns many trademark registrations and applications for and including “IQOS” worldwide, including the following trademarks:

- International Registration for IQOS (word) with registration no. 1218246, registered on July 10, 2014 for, inter alia, the European Union, for goods in classes 9, 11, and 34, including batteries for electronic cigarettes, electronic vaporizers and tobacco;
- International Registration for logo (device) with registration no. 1329691, registered on August 10, 2016, for, inter alia, Australia, China, the European Union, Japan, and the United States of America (“United States”), for the same goods as the previous trademark; and
- International Registration for logo (device) with registration no. 1338099, registered on November 22, 2016, for, inter alia, Australia, the European Union, Japan, and the United States, for services in class 35, including advertising, marketing, and retail of heated tobacco products, electronic cigarettes, and electronic smoking devices.

The trademarks are hereinafter individually and jointly referred to as the “Trademark”.

The Respondent registered the disputed domain name on January 21, 2019. The disputed domain name resolved to a website which operated an online shop in English, which allegedly offered the Complainant’s products under the Trademark, as well as competing third party products of other commercial origin. The website is provided in English (the “Respondent’s Website”).

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Trademark, which it identically adopted, in addition to the non-distinctive and descriptive word “post”.

Further, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant considers the Respondent’s behavior showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Trademark. Firstly, the Respondent is not an authorized distributor or reseller of the Complainant’s products under the Trademark. Secondly, the Respondent’s Website sold competing tobacco products and/or accessories of other commercial origin. Thirdly, the Respondent’s Website did not meet the requirements for a bona fide offering of goods as it does not meet the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test”) as the disputed domain name suggests affiliation with the Complainant, the Respondent’s Website used original images of the Complainant without authorization, the Respondent’s Website did not provide information regarding the identity of the provider of the Respondent’s Website, while the Respondent’s Website also offered products that compete with those of the Complainant.

The Complainant considers it evident from the Respondent’s use of the disputed domain name that he knew of the Trademark when registering the disputed domain name, as the Respondent’s Website started offering the Complainant’s products under the Trademark immediately after registration of the disputed domain name. In this respect the Complainant claims that the term “IQOS” is purely imaginative and unique to the Complainant. According to the Complainant it is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website or location.

B. Respondent

The Respondent sent three emails to the Center on April 24, 2019, confirming his email address, claiming that he choses not to amend the Complaint, and expressing his confusion about the proceeding, respectively. The Center replied that the Respondent would be notified when the proceeding would commence, and that he will have 20 days to file a Response as of then.

The Center subsequently sent the Respondent a notification of Complaint and Commencement of Administrative Proceeding on April 30, 2019. The Respondent did, however, not file a Response.

6. Discussion and Findings

The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established that the generic Top-Level Domain (“gTLD”) “.com” should typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.

The Panel finds that the disputed domain name is confusingly similar to the Trademark. The Respondent has taken the Trademark in its entirety, and merely added the word “shop” at the end of the disputed domain name. The added word does not prevent the disputed domain name to be confusingly similar to the Trademark, and may actually contribute to the possible confusion as it expresses that products under the Trademark are being offered for sale.

Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use the Trademark or to register the disputed domain name, the disputed domain name resolved to the Respondent’s Website that intentionally created confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website, and the Respondent’s Website offered competing products for sale. In particular bona fide offering of goods and services by the Respondent is lacking as the Respondent’s Website does not meet the Oki Data test, which applies the following cumulative requirements (see also section 2.8 of WIPO Overview 3.0):

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

Although the Respondent’s Website offered the goods at issue, it also offered products which compete with the Complainant’s products under the Trademark, thus violating requirement (ii) above, and the Panel agrees with the Complainant that the Respondent did not disclose its relationship with the Complainant, or at least not prominently, because the disclaimer is hidden away at the bottom of the webpage, so that requirement (iii) is also violated.

The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.

In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Trademark in mind, as the Complainant secured registration for the Trademark several years before — also in Australia— whereas the Respondent immediately upon registration of the disputed domain name redirected the disputed domain name to the Respondent’s Website offering the Complainant’s products under the Trademark and competing products for sale, using images of the Complainant’s products without authorization.

Further, the Panel considers the Respondent’s Website offering the Complainant’s and competing products for sale, and creating an intentional association with the Complainant and the Trademark, as clear evidence of the Respondent’s use of the disputed domain name to the detriment of the Complainant and the Trademark, and accordingly as use in bad faith.

Consequently, the third and last element of paragraph 4(a) of the Policy is also met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <iqospost.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: June 6, 2019